Absent the existence of such a condition or defense under Section 32(1) of the Lanham Act, 15 U.S.C. Section 1114(1), Trump would be subject to injunctive and other relief for use of a colorable imitation of Caesars World's trademarks in connection with a promotion of his casino hotel if there is a likelihood of confusion, mistake or deception. Similarly, under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a) and the common law of New Jersey, relief may be granted if there is a tendency to deceive or a likelihood of confusion, e.g., American Greetings Corp. v. Dan-Dee Imports, Inc., 619 F. Supp. 1204 (D.N.J. 1985).

C. Generic Nature of the Marks : Trump's first contention is that "Palace" as used in connection with hotel and casino services is a generic term signifying an establishment offering luxurious accommodations and entertainment rather than signifying the origin of such services.

Trump points to the wide use of "palace" for all manner of restaurants, hotels, bars and food suppliers, e.g., Beef Palace, Carl's Potato Palace, Brothers Pizza Palace, Caesars Palace, Imperial Palace Hotel and Casino, Palace Hotel Lucerne, The Poker Palace. He submits the report of a lexicographer and linguist Lawrence Urdang who concludes "that palace used in the name of establishments of any kind is generic and hence free of any encumbrances that may be occasioned by any and all claims to the contrary." (Report at 12; Exh. P-23(a). Dr. Urdang defines "palace" as "a grand or stately building sometimes gaudily decorated, fitted up as a place of public amusement, entertainment, refreshment, or accommodation. " Report at 11; Exh. P-23(a). This, according to Dr. Urdang, is a metaphoric extension of the word palace from its original meaning and is widely accepted by writers and speakers in England and America.

I conclude that in the contest between the linguistic experts, Caesars World's expert William A. Stewart has the better of the argument. (Report, Exhibit D-83A). He points out that invariably when a writer or speaker intends to use "palace" in a sense urged by Trump's counsel, a modifying adjective or noun is employed in connection with "Palace" in order to transform the primary meaning of "Palace" to the metaphorical one, e.g., Palace Club, Palace Hotel, Crystal Palace, Dairy Palace.

Dr. Stewart takes issue with Dr. Urdang's conclusion that palace, without more, means place of public entertainment or accommodation and thus is a generic term for hotel or casino. Using dictionary references, Dr. Stewart persuasively demonstrates that none of the dictionary definitions of palace and accommodation justify Dr. Urdang's conclusion that palace is a generic word for accommodation.

Neither Caesars Palace nor The Palace are generic as the courts have defined that term.

The next question is whether in fact these marks have come to identify Caesars World as the source of the services provided under the two trademarks. Two categories of evidence demonstrate that the marks do identify the source of the services not only in Las Vegas but also to a lesser extent in Atlantic City.

First there is the evidence of the very extensive advertising and promotional activities of Caesars World in which it promotes its casino hotel activities both nationally and internationally under the names "Caesars Palace," "The Palace" and "Caesars."

These advertising and promotional efforts relate to the casino hotels located in Las Vegas, Lake Tahoe and Atlantic City. In the process the words "Caesars" and "Palace" and "Caesars Palace" have come to identify in the minds of the gambling public the casino and hotel services furnished by Caesars World. Even though the word "palace" is not part of the name of the Atlantic City Casino, to some extent at least the Atlantic City gambling public identifies the name Palace with that casino. The international trade uses the name Caesars and Palace to refer to all three of the United States casinos operated by Caesars World.

The other kind of evidence showing an association between the word "palace" and Caesars World's facility in Atlantic City is the survey which Caesars World commissioned Admar Research, Inc. to take in Atlantic City in April and May of 1986.

The purpose of the first survey was to determine the meaning to consumers of the word "palace". 299 interviews were conducted with male and female heads of a household who were visiting Atlantic City and who made at least one other visit during the past year to any United States or foreign city that had legal gambling. The respondents were asked for the meaning of the word "palace" and were then asked whether they ever heard the word "palace" as part of the name of a casino hotel, and, if so, what was the full name of the casino using "palace" as part of its name.

When hearing the word "palace," the first thing that came to the consumers' minds was royalty/regal, (19.3 percent), Caesars (12 percent), luxury/money (12 percent), home/house/residence (9.3 percent), Trump's (3.7 percent). After probing for additional meanings of the word "palace," a total of 34.7 percent made a royalty/regal association, 27.4 percent cited luxury/money, 18.7 percent gave a home/house/residence as their answer, 14.7 percent referred to Caesars and 5 percent referred to Trump's. When specifically asked if they ever heard the word "palace" as part of the name of a casino hotel, 45.8 percent mentioned Caesars and 11.4 percent cited Trump's.

(1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the scope of the owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised in the same media; (8) the extent to which the targets of the parties sales efforts are the same; (9) the relationship of the goods in the minds of the public because of a similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market.

Id. at 1229.

At first blush the similarity between Caesars World's marks and Trump's proposed name seems nonexistent. Caesars Palace contains the strong word "Caesars" and Trump's Palace contains the strong word "Trump," serving to distinguish it from both Caesars Palace and from any facility called simply "The Palace." Moreover, in Atlantic City where Trump's Palace will be located Caesars World's casino hotel is presently named Caesars Atlantic City Casino Hotel without any reference whatsoever to "Palace." Without more, these facts would end the inquiry about confusion.

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